TRADEMARK LICENSE
AGREEMENT
Between
GENERAL ELECTIC COMPANY
and
ARTISAN HOUSE
dated
May l, 1995
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT, made as of May 1, 1995, between GENERAL ELECTRIC COMPANY, a
corporation organized and existing under the laws of the State of New York,
United States of America, with an office at Two Independence Way, Princeton, New
Jersey 08540 (hereinafter referred to as "GE") and ARTISAN HOUSE, a corporation
organized and existing under the laws of the State of California, with an office
at 1755 Glendale Boulevard, Los Angeles, California 90026 (hereinafter referred
to as "LICENSEE").
WITNESSETH
WHEREAS, GE is the owner in the United States, Canada and Mexico of the
valuable mark, name, character, symbol, design, likeness and visual
representation of the NIPPER DOG and PHONOGRAPH ("HIS MASTER'S VOICE") and
certain individual components thereof (sometimes hereinafter referred to,
jointly or severally, as the "Trademark"), as well as certain trademark
registrations therefor;
WHEREAS, LICENSEE desires the right to manufacture and sell a certain
product or products, as hereinafter defined and described in Appendix A hereto
which is made a part of this Agreement, (hereinafter called "Articles"), which
bear, are decorated with or reproduce the Trademark, or which otherwise make use
of the Trademark, and GE is willing to grant such right on the terms and
conditions hereinafter provided;
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NOW, THEREFORE, in consideration of the premises and of the mutual promises
hereinafter set forth, the parties hereto agree as follows:
1. GE hereby grants to LICENSEE a non-exclusive license under the United
States, Canadian and Mexican Trademark to manufacture and sell the Articles upon
the terms and conditions hereinafter specified. No license is granted hereunder
under any other foreign Trademark rights to manufacture or sell the Articles.
2. LICENSEE shall have the right to use the Trademark only so long as the
Articles are manufactured in accordance with standards of design, material and
workmanship acceptable to GE. LICENSEE shall use the Trademark only in such
manner as shall have been previously approved in writing by GE. Thereafter any
changes in the manner or method of use of the Trademark shall be subject to the
prior written consent of GE. LICENSEE agrees to use the legend set forth in
Appendix A hereto in conjunction with the use of the Trademark hereunder.
LICENSEE agrees that said legend will contain any additional information or
symbols requested by GE and the format, manner and location of affixing, and use
of such legend will be subject to the prior written approval of GE.
3. (a) GE, or GE's representative, shall have the right, at all reasonable
times, to inspect the Articles as well as the method of their manufacture,
in order that GE may satisfy itself that the Articles meet its standards.
LICENSEE shall provide, for GE's prior written approval, without charge,
two preproduction samples of each version of each kind of the Articles to
be manufactured under this license and two pre-
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production samples of any Articles incorporating any proposed change from
samples previously approved by GE whenever LICENSEE proposes to make any
changes or modifications whatsoever in the Articles. LICENSEE shall provide
GE, at GE's request, from time to time, without charge, a reasonable number
of production samples of the Articles.
(b) Upon receipt of advice from GE, or its representatives, specifying
the particular respect in which any Article and/or the manner or method of
use of the Trademark does not, in the sole opinion of GE, conform to the
required standard of quality, LICENSEE shall cease further production
and/or sale of such Articles, and, at LICENSEE's expense, shall promptly
take adequate measures to correct the deficiency. If, in the sole judgment
of GE, LICENSEE has failed to take such adequate measures, GE shall have
the right to terminate the licenses granted herein as respects such
Articles and/or use of the Trademark by giving LICENSEE written notice of
such termination, whereupon LICENSEE shall terminate forthwith all
production and sale of such Articles, destroy all inventory of such
Articles, and cease such use of the Trademark, the said right of
termination being without prejudice to GE's right to terminate the entire
Agreement, for this or any other default, in accordance with Section 17(a)
hereof.
4. LICENSEE shall provide to GE, or GE's representative, for approval prior
to the use thereof, and without charge, samples of all packaging, labels,
advertising and other material on which the Trademark appears, or which is to be
used in conjunction with the marketing of the Articles, and LICENSEE
specifically undertakes to amend to the satisfaction of GE any such packaging,
labels, advertising and other material which are not
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approved by GE. LICENSEE agrees to use the trademark legend set forth in
Appendix A hereto in conjunction with the use of the Trademark on packaging,
labels, advertising and other materials.
5. Samples of the Articles and packaging, labels, advertising and other
material to be furnished to GE in accordance with Sections 3 and 4, hereinabove,
shall be delivered by LICENSEE and at LICENSEE's expense to GE at GE and RCA
Licensing Management Operation, Inc., at its postal address: P.O. Box 2023,
Princeton, New Jersey 08543-2023, or its courier address: Two Independence Way,
Princeton, New Jersey 08540, or at such other latest address as GE shall have,
by notice given to LICENSEE in accordance with Section 23, designated as its
address for such purpose.
6. (a) GE reserves the right to require, prior to the selling of any
Article, and/or for the continued selling of any Article, that it be
covered by a current, valid certificate, acceptable to GE, from an
independent testing laboratory. To obtain such certificate, LICENSEE, at
its own expense, shall submit to an independent testing laboratory chosen
by LICENSEE, and acceptable to GE, such reasonable number of samples of
such Article, and of the raw and semi-finished materials used in its
manufacture, upon which LICENSEE and such laboratory may agree; and,
LICENSEE shall, at LICENSEE's own expense, obtain from such laboratory and
submit to GE a certificate that the sale and use of such Article does not
present a health or safety hazard, and further that such Article conforms
to any and all applicable standards and specifications, governmental or
industry, for products of such type or types. LICENSEE will keep such
certificates current, and, in the event of any changes in
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the Article or materials used, will at LICENSEE's own expense, resubmit
samples thereof to such laboratory and obtain and submit to GE a similar
certificate covering such Article as changed. All certificates must be in a
form acceptable to GE.
(b) LICENSEE shall observe all applicable Federal, State, Provincial
and local laws, regulations and ordinances in effect which relate to the
manufacture and sale of the Articles, and LICENSEE agrees that the Articles
will be manufactured, sold, labeled, advertised and distributed in
accordance with all applicable Federal, State, Provincial and local laws,
regulations and ordinances. LICENSEE shall be solely responsible for
obtaining and maintaining all product registrations and/or approvals
necessary or advisable to obtain or maintain in order to manufacture and
sell the Articles. Upon the termination of this Agreement in whole or with
respect to any one or more Articles, all such product registrations and
approvals, to the extent applicable to such Articles, shall be promptly
assigned to GE or surrendered to the issuing authority.
7. LICENSEE recognizes GE's ownership and title to the Trademark and it is
understood that LICENSEE shall not claim adversely to GE any right, title or
interest in and to the Trademark. All use of the Trademark by LICENSEE on or in
connection with Articles shall inure to the benefit of GE. It is understood and
agreed between the parties hereto that GE has extended to LICENSEE only a mere
permission to use the Trademark as herein provided, which is not coupled with
any interest.
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8. Nothing in this Agreement, and no approval or consent given by GE under
this Agreement, shall be construed as, or have the effect of, conferring a
license by implication, estoppel or otherwise upon LICENSEE or any third party
under any industrial, intellectual or commercial property rights of GE or of any
third party, except the licenses expressly granted to LICENSEE in Section 1 of
this Agreement.
9. Subject to the receipt by GE of the initial non-refundable minimum
payment prescribed in Article 13 of this Agreement, this Agreement shall be
effective as of the date hereof and, unless terminated as provided in Section 17
hereof, shall continue for a period of two (2) years after such effective date,
subject to the right of either party to terminate the Agreement effective at any
time after the first year on three months' prior written notice to the other
party.
10. LICENSEE agrees not to use any corporate name or any name or mark of
any kind which comprises or indicates any trademark or trade name of GE or in
the opinion of GE is confusingly similar thereto except as approved hereunder.
11. LICENSEE will promptly call to the attention of GE the use of any
trademark by any third party which LICENSEE considers might be an infringement
of, or confusingly similar to the Trademark. However, GE shall have the sole
right to decide whether or not proceedings shall be brought against such third
party and to prosecute any such proceedings. In the event that GE decides to
take any action against such third parties, LICENSEE agrees to cooperate fully
with GE to whatever extent is necessary to prosecute
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such action, all expenses being borne by GE and all awards and benefits being
retained by GE.
12. (a) LICENSEE shall maintain at its own expense in full force and effect
at all times during which any Articles are being sold, with a responsible
insurance carrier acceptable to GE, at least a One Million Dollar products
liability insurance policy with respect to the Articles. Such insurance
shall be for the benefit of GE and LICENSEE and shall provide for at least
ten days' prior written notice to GE and LICENSEE of the cancellation or
substantial modification thereof. Such insurance shall provide that the
insurer shall not be subrogated to any claim which any party may have
against GE. Such insurance may be obtained for GE by LICENSEE in
conjunction with a policy or product liability insurance which covers
products other than the Articles.
(b) LICENSEE shall, from time to time upon reasonable request by GE,
promptly furnish or cause to be furnished to GE evidence in form and
substance satisfactory to GE, of the maintenance of the insurance required
by subparagraph (a) above, including, but not limited to, originals or
copies of policies, certificates of insurance (with applicable riders and
endorsements) and proof of premium payments.
13. LICENSEE agrees to pay as compensation to GE:
(a) Within ten days of the date of execution hereof by the last party
to execute, a non-refundable minimum of $1,000.00 which amount shall be
creditable by LICENSEE against the first $1,000.00 of compensation accruing
to GE under paragraph (b) of this Article.
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(b) With respect to all Articles sold by LICENSEE under and during the
term of this Agreement a sum equal to five percent (5%) of the Net Sales
(as herein defined) of all such Articles. "Net Sales" shall, for the
purpose of this Agreement, be defined as the aggregate of the genuine
selling prices at which customers are billed in the usual course of
business for the Articles, net of any applicable sales taxes. Articles
shall be considered as sold, when billed out or, if not billed out, when
delivered, shipped, mailed, used or set aside for subsequent use by
LICENSEE, whichever shall first occur.
14. Within thirty (30) days after March 31, June 30, September 30 and
December 31 of each year during the term of this Agreement, LICENSEE shall
furnish to GE a certified statement specifying the quantities and the Net Sales
of the Articles sold by LICENSEE during the preceding calendar quarter, the
total amounts of compensation accruing to GE hereunder with respect to the Net
Sales for such calendar quarter, the credit taken under Article 13(a) against
said accrued amounts and the total amount of compensation payable to GE for such
quarter. At the time of furnishing such reports, LICENSEE shall make the
payments prescribed therefor in the preceding Section 13. Similar statements
likewise shall be rendered, and payment made, to GE within thirty (30) days
after, and as of, the date of any termination of this Agreement covering the
period from the end of that covered by the last preceding statement to the date
of such termination.
15. LICENSEE shall keep, for no less than two years, the expiration or any
earlier termination of this Agreement notwithstanding, true and accurate
records, files and books of account containing all the data reasonably
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required for the computation and verification of the amounts to be paid and the
information to be given in the statements herein provided for, and shall at all
reasonable times permit independent certified public accountants engaged by GE
adequately to inspect and make photocopies of the same for the sole purpose of
determining the amounts payable by LICENSEE pursuant to Section 13 of this
Agreement.
16. (a) LICENSEE agrees to indemnity and hold GE harmless from any loss,
liability, damage, cost or expense, including reasonable attorney's fees,
paid or incurred by GE, based upon or arising out of any claim for (i) any
allegedly unauthorized use of any patent, process, idea, method, copyright,
trademark or device (other than the Trademark) by LICENSEE in connection
with the Articles, or for (ii) any alleged defects in the Articles, or for
(iii) any alleged manufacture, use, sale, labeling, advertising or
distribution in violation of any applicable Federal, State or local law.
LICENSEE shall, at its own expense, defend any lawsuits or other
proceeding based on any such claim. The parties shall promptly advise each
other of any lawsuit or other proceeding brought on the basis of any such
claim and LICENSEE shall keep GE fully informed of the progress of such
proceeding, and GE and LICENSEE will consult one another regularly thereon.
(b) LICENSEE agrees that the methods of promotion and sale of Articles
shall be of high standard and shall in no manner reflect adversely upon the
good name of GE or the Trademark.
17. (a) In the event that LICENSEE shall be in default in compliance with
any of the terms and conditions of this Agreement and fails to cure
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such default within thirty (30) days after GE has given notice specifying
the nature of such default, GE shall have the right, without prejudice to
any other rights GE may have, to terminate this Agreement and all rights
granted hereunder by giving written notice to LICENSEE, and this Agreement
and all rights granted hereunder to LICENSEE shall terminate thirty (30)
days after the date such notice of termination was given.
(b) In the event that LICENSEE files a petition for suspension of
payment of its debts or files a petition to be discharged from its debts,
or if a petition is filed by any party to adjudicate LICENSEE insolvent or
to appoint a receiver for LICENSEE, or if LICENSEE discontinues its
business or makes an assignment for the benefit of creditors or an
arrangement pursuant to any bankruptcy, insolvency or similar law, or
becomes subject to a corporate reorganization procedure, or if LICENSEE
defaults on any obligation which is secured by a security interest, in
whole or in part, in the Articles, this Agreement and all rights granted
hereunder shall terminate automatically without prejudice to any other
rights GE may have.
(c) This Agreement and all rights and obligations hereunder are
personal to LICENSEE. Therefore, if LICENSEE shall sell or otherwise
dispose of substantially all of its relevant assets to a third party, or if
control of LICENSEE or of LICENSEE's relevant business shall be
transferred, GE shall have the right, without prejudice to any other rights
GE may have, to terminate this Agreement upon written notice to LICENSEE.
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18. Except to the extent expressly provided otherwise in this Section 18,
LICENSEE shall cease to use the Trademark in any manner whatsoever as of the
date of expiration or earlier termination of this Agreement. LICENSEE agrees
that upon expiration or termination of this Agreement it will not manufacture
Articles, and, except as mandated by Section 3(b), will dispose of the unsold
inventory of the Articles and all printed matter, including packaging, bearing
the Trademark and all decals, logos and items of similar nature manufactured or
printed by LICENSEE within ninety (90) days thereof, and any balance thereafter
shall be immediately destroyed. All unsold inventory and printed matter and
other items will however be immediately destroyed if LICENSEE is terminated by
GE under Section 17(a). In all cases, LICENSEE shall give GE immediate written
assurances it has ceased the manufacture of the Articles and that the Trademark
is no longer being used as of the date of expiration or termination and that
such inventory of the Articles and printed matter and other items have been
destroyed except to the extent otherwise provided herein. LICENSEE shall pay
license fees to GE in accordance with Section 13, et seq., of this Agreement on
post-termination/expiration sales permitted under this clause.
19. Any failure by GE to act in respect of any breach of any term or
condition of this Agreement, or any non-exercise by GE of any option, shall not
be considered a waiver by GE of any rights hereunder.
20. In the event of the failure of LICENSEE, for any reason, to cease the
use of the Trademark as provided in this Agreement, LICENSEE agrees and hereby
specifically consents to GE's obtaining a decree of a Court having suitable
jurisdiction ordering LICENSEE to cease such use of the Trademark
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forthwith. Said consent is based on the recognition by LICENSEE that such
further use would dilute the Trademark and impair GE's goodwill therein, for
which monetary payment alone would be an inadequate remedy for GE.
21. This Agreement and all rights and obligations hereunder are personal to
the LICENSEE and shall not be assigned or sublicensed or otherwise transferred,
in whole or in part, by LICENSEE without the prior written consent of GE. GE
shall have the right to assign or otherwise transfer this Agreement in its sole
discretion.
22. This Agreement shall be governed by and construed in accordance with
the laws of the State of New York applicable to agreements made and to be
performed therein.
23. Any notice or other communication given under this Agreement shall be
deemed to have been sufficiently given when:
(a) mailed by the registered or certified mails with the requisite
postage affixed, addressed to the party notified, or
(b) transmitted by prepaid facsimile or telex, and confirmed in
writing sent within two (2) days by prepaid regular first class airmail,
addressed to the party notified, or
(c) delivered personally in writing to the party notified, at its address
hereinbelow set forth, or at such other latest address as said party shall have,
by notice given in accordance herewith, designated as its address for purposes
hereof:
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To GE at: To LICENSEE at:
GE and RCA Licensing Artisan House
Management Operation, Inc.
postal address:
P.O. Box 2023
Princeton, New Jersey 08543-2023
street address: street address:
Two Independence Way 1755 Glendale Boulevard
Princeton, New Jersey 08540 Los Angeles, California 90026
The date of such deposit, transmission or delivery, respectively, shall be
the date on which such notice or other communication shall be deemed to have
been given.
24. This Agreement sets forth the entire agreement and understanding
between the parties and merges all prior discussions, negotiations and
agreements, whether written, oral or implied, between them relating to the
subject matter hereof. Neither of the parties shall be bound by any conditions,
definitions, warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or as duly set forth on
or subsequent to the date hereof in writing and signed by a
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proper and duly authorized officer or representative of the party to be bound
thereby.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized officers or representatives effective as of
the day and year first above written.
GENERAL ELECTRIC COMPANY ARTISAN HOUSE
By: [ILLEGIBLE] By: [ILLEGIBLE]
------------ ------------
Date: May 8, 1995 Date: 4/24/95
Witness: Witness:
/s/ Steven N. Morin ________________________________________
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APPENDIX A
[Definitions and description of products and manner of setting forth legend on
the products]
Articles: Handmade Metal Wall Sculpture
Legend: Trademark of General Electric Company.